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govinfo:USCOURTS-njd-1_19-cv-08935-6
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
DELLISA RICHARDSON,
Plaintiff,
v.
CASCADE SKATING RINK and LIVE
LIFE HEADPHONES LLC,
Defendants.
Civ. No. 19-8935-NLH-MJS
OPINION
APPEARANCES:
DELLISA RICHARDSON
1510 CHESTNUT LANE
WESTVILLE, NJ 08093
Plaintiff appearing pro se
CHRISTOPHER D. WARREN
WARREN LAW GROUP
112 W. 34TH STREET - 17TH FLOOR
NEW YORK, NY 10120
On behalf of Defendants Cascade Skating Rink and Live Life
Headphones LLC
HILLMAN, District Judge
This matter comes before the Court by way of a motion to
dismiss, [Docket Number 77], filed by Defendants Cascade Skating
Rink (“Cascade”) and Live Life Headphones LLC (“Live Life”)
(collectively “Defendants”), pursuant to Federal Rule of Civil
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Procedure 12(c). Pro se Plaintiff Dellisa Richardson opposes the
motion. See Plaintiff’s Response in Opposition (“Opp. Br.”)
[Dkt. No. 89]. The Court has considered the parties’ submissions
and decides the matter without oral argument pursuant to Federal
Rule of Civil Procedure 78. For the reasons that follow,
Defendants’ motion will be denied.
BACKGROUND
The facts and procedural history of this case are well-
known to the parties and were previously described in the
Court’s December 15, 2020 Opinion [Dkt. No. 15], April 6, 2021
Opinion [Dkt. No. 28], and March 21, 2022 Opinion [Dkt. No. 98].
Accordingly, the Court adopts that background and will not
restate the full history here.
Plaintiff claims to be the owner and inventor of the
“Silent Skate business method concept.” Amended Complaint [Dkt.
No. 17]. As detailed by the parties, Silent Skate is a roller-
skating service/event during which customers roller-skate while
listening to curated music on wireless headphones. Plaintiff
avers that Defendants partnered to host similar if not identical
Silent Skating events, going so far as to market and promote
their events as “Silent Skate.” On June 12, 2018, Plaintiff
contacted Defendants via email, claiming their use of the phrase
“Silent Skate” infringed on her trademark.
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On October 2, 2018, Plaintiff filed a trademark application
to register the word mark “Silent Skate” with the United States
Patent and Trademark Office (“USPTO”). As defined under the
USPTO’s “Goods and Services” description of the mark, Silent
Skate encompasses “Arranging, organizing, conducting, and
hosting social entertainment events; Hosting social
entertainment events, namely, skating events, for others.”
Review of the USPTO’s Trademark Electronic Search System
(“TESS”) shows that Plaintiff’s mark was first in use as of
December 7, 2015, and it was first used in commerce on May 6,
2016. The mark was federally registered on March 12, 2019.
On March 25, 2019, Plaintiff filed the initial Complaint
[Dkt. No. 1] against Cascade and Live Life, claiming Defendants
infringed on her “Silent Skate” trademark. Specifically,
Plaintiff claims Defendants infringed on her mark by holding
events that included the mark and or similar terms. She avers
that Defendants were notified of the trademark and that their
infringing activities confused her customers. She seeks to
recover “all of the profit” Defendants made from the infringing
events, as well as “court costs, time spent off work, and pain
and suffering.” Complaint [Dkt. No. 1].
On January 4, 2021, Plaintiff filed an Amended Complaint,
claiming Defendants infringed on her mark on at least nineteen
separate occasions, noting the following dates: November 8,
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2018; December 13, 2018; January 10, 2019; February 21, 2019;
March 21, 2019; April 25, 2019; July 18, 2019; August 22, 2019;
September 19, 2019; December 26, 2019; February 20, 2020; April
2, 2020; July 28, 2020; August 20, 2020; September 17, 2020;
October 22, 2020; November 19, 2020; December 24, 2020; and
January 21, 2021. Amended Complaint [Dkt. No. 17]. Plaintiff
claims Defendants’ infringing activities have caused her to lose
business opportunities “because my customers no longer travel to
my Silent-Skate events nor do they no longer [sic] hire me to
host Silent Skate events in Georgia,” as well as lost goodwill,
damage to her reputation, dilution of her mark, emotional
distress, and pain and suffering. Id. at 4. In total, she
requests damages of $1,003,241.00 plus costs. Ibid.
On October 19, 2021, Defendants filed the instant motion to
dismiss, moving for judgment on the pleadings pursuant to Rule
12(c). Plaintiff filed opposition to the motion on December 30,
2021, and Defendants filed their reply on January 14, 2022.
1 The
motion is therefore ripe for adjudication.
1 Plaintiff filed what appears to be a sur-reply [Dkt. No. 94],
without leave of court to do so, which Defendants ask the Court
to disregard. Although acting pro se, Plaintiff still has an
obligation to abide by the rules of court. Local Civil Rule
7.1(d)(6) provides that “[n]o sur-replies are permitted without
permission of the Judge ... to whom the case is assigned.”
Plaintiff did not seek leave before filing her sur-reply. To
that extent, Defendants are correct. Accordingly, the Court
typically will not consider sur-replies that parties have filed
without seeking and receiving leave to do so. However, in light
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DISCUSSION
A. Subject Matter Jurisdiction
Plaintiff brings this action for trademark infringement,
asserting federal question jurisdiction. This Court exercises
subject matter jurisdiction over this matter pursuant to 28
U.S.C. § 1331.
B. Legal Standard of a Motion for Motion to Dismiss and
Judgment on the Pleadings
A motion for judgment on the pleadings is governed by Rule
12(c). Ellaisy v. City of Atl. City, 2021 WL 4473139, at *2 n.4
(D.N.J. Sept. 20, 2021). The Rule provides that “[a]fter the
pleadings are closed – but early enough not to delay trial – a
party may move for judgment on the pleadings.” Fed. R. Civ. P.
12(c). In analyzing a Rule 12(c) motion, the Court applies the
same legal standards as applicable to a motion file pursuant to
Rule 12(b)(6). Turbe v. Gov’t of V.I., 938 F.2d 427, 428 (3d
Cir. 1991). Therefore, in assessing a motion for judgment on the
pleadings, the Court analysis proceeds in the same manner as it
would for a motion to dismiss based on Rule 12(b)(6).
of Plaintiff’s pro se status, adopting such a position would be
inappropriate. Therefore, because Plaintiff is proceeding pro
se in this action, the Court shall liberally construe her
submissions to afford both parties the benefit of their complete
advocacy in this matter. Higgs v. Att’y Gen., 655 F.3d 333, 339
(3d Cir. 2011). Nonetheless, Plaintiff is forewarned of the
need to comport with the Local Civil Rules, as the Court will
not consider any future, improperly filed sur-replies.
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When considering a motion to dismiss a complaint for
failure to state a claim upon which relief can be granted
pursuant to Fed. R. Civ. P. 12(b)(6), the Court must accept all
well-plead allegations in the complaint as true and view them in
the light most favorable to the plaintiff. Evancho v. Fisher,
423 F.3d 347, 351 (3d Cir. 2005). It is well-established that a
pleading is sufficient if it contains “a short and plain
statement of the claim showing that the pleader is entitled to
the relief.” Fed. R. Civ. P. 8(a)(2).
“While a complaint attacked by a Rule 12(b)(6) motion to
dismiss does not need detailed factual allegations, a
plaintiff’s obligation to provide the ‘grounds’ of his
‘entitle[ment] to relief’ requires more than labels and
conclusions, and a formulaic recitation of the elements of a
cause of action will not do ....” Bell Atl. Corp. v. Twombly,
550 U.S. 544, 555 (2007) (alteration in original) (citations
omitted). To determine the sufficiency of a complaint, the Court
must take three steps: (1) the Court must take not of the
elements a plaintiff must plead to state a claim; (2) the Court
should identify the allegations that, because they are no more
than legal conclusions, are not entitled to the assumption of
truth; and (3) when there are well-pleaded factual allegations,
the Court should assume their veracity and then determine
whether they plausibly give rise to an entitlement for relief.
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Malleus v. George, 641 F.3d 560, 563 (3d Cir. 2011) (quoting
Ashcroft v. Iqbal, 556 U.S. 662, 664 (2009) (alterations,
quotations, and other citations omitted).
In weighing a motion to dismiss, the Court asks “not
whether a plaintiff will ultimately prevail but whether the
claimant is entitled to offer evidence to support the claim.”
Twombly, 550 U.S. at 563 n.8 (quoting Scheuer v. Rhoades, 416
U.S. 232, 236 (1974)); see also Iqbal, 556 U.S. at 684 (“Our
decision in Twombly expounded the pleading standard for ‘all
civil actions’ ....”); Fowler v. UPMC Shadyside, 578 F.3d 203,
210 (3d Cir. 2009) (“Iqbal ... provides the final nail in the
coffin for the ‘no set of facts’ standard that applied to
federal complaints before Twombly.”). “A motion to dismiss
should be granted if the plaintiff is unable to plead ‘enough
facts to state a claim to relief that is plausible on its
face.’” Malleus, 641 F.3d at 563 (quoting Twombly, 550 U.S. at
570).
A court in reviewing a Rule 12(b)(6) motion must only
consider the facts alleged in the pleadings, the documents
attached thereto as exhibits, and matters of judicial notice. S.
Cross Overseas Agencies, Inc. v. Kwong Shipping Grp. Ltd., 181
F.3d 410, 426 (3d Cir. 1999). A court may consider, however, “an
undisputedly authentic document that a defendant attaches as an
exhibit to a motion to dismiss if the plaintiff's claims are
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based on the document.” Pension Benefit Guar. Corp. v. White
Consol. Indus., Inc., 998 F.2d 1192, 1196 (3d Cir. 1993). If any
other matters outside the pleadings are presented to the court,
and the court does not exclude those matters, a Rule 12(b)(6)
motion will be treated as a summary judgment motion pursuant to
Rule 56. Fed. R. Civ. P. 12(b).
Applying the above standard to the instant record, the
Court is left to conclude that Plaintiff presents sufficient
facts to state a claim for relief that is plausible on its face.
C. Analysis
Plaintiff’s sole claim is for trademark infringement, thus
narrowing the Court’s analysis to whether Plaintiff states a
claim for trademark infringement under the Lanham Act.
“Congress enacted the Lanham Act in 1946 in order to
provide a national protection for trademarks used in interstate
and foreign commerce.” Park ‘N Fly, Inc. v. Dollar Park and Fly,
Inc., 469 U.S. 189, 193 (1985). The Lanham Act, 15 U.S.C. §§
1051, et seq., “was intended to make ‘actionable the deceptive
and misleading use of marks’ and ‘to protect persons engaged in
... commerce against unfair competition.’” Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 767-68 (1992) (quoting 15
U.S.C. § 1127). Specifically, the Lanham Act provides that:
Any person who shall, without the consent of
the registrant[,] use in commerce any
reproduction, counterfeit, copy, or
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colorable imitation of a registered mark in
connection with the sale, offering for sale,
distribution, or advertising of any goods or
services on or in connection with which such
use is likely to cause confusion, or to
cause mistake, or to deceive ... shall be
liable in a civil action by the registrant
....
15 U.S.C. § 1114(1).
As noted previously by this Court, to state a claim for
trademark infringement, the plaintiff must allege three
elements: “(1) it has a valid and legally protectable mark; (2)
it owns the mark; and (3) the defendant’s use of the mark to
identify goods or services causes a likelihood of confusion.” A
& H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d
198, 210 (3d Cir. 2000). Applying this analysis to the instant
record and in light of the Court’s March 30, 2022 Opinion,2
Plaintiff plainly states a claim of trademark infringement.
As stated previously, there is no dispute among the parties
that Plaintiff satisfies the first two elements. Plaintiff owns
and registered the mark Silent Skate with the USPTO. Likewise,
Plaintiff satisfies the third element, as the Court found
Defendants’ use of the mark creates a likelihood of confusion:
Here, the Court need not conduct a detailed
analysis under each Lapp factor because
Plaintiff sufficiently contends Defendants’
advertisements use Plaintiff’s exact
2 Although the Court will not restate its March 30, 2022 Opinion
in full, the findings detailed therein directly bear upon the
Court’s ruling on the instant motion.
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trademark, which is likely to cause consumer
confusion. See U.S. Jaycees, 639 F.2d at
142 (“there is great likelihood of confusion
when an infringer uses the exact
trademark”); Opticians, 920 F.2d at 195
(finding “likelihood of confusion . . .
inevitable, when . . . the identical mark is
used concurrently”).
The issue of confusion is further
demonstrated through the USPTO’s own
rejection of Defendant Live Life’s trademark
application for the mark Silent Sk8 because
of the likelihood of confusion between
Silent Sk8 and Plaintiff’s Silent Skate
trademark. (Plaintiff’s Brief in support of
preliminary injunction, [Dkt. Nos. 56-1, 56-
2]). In assessing Live Life’s trademark
application for the mark Silent Sk8, USPTO
compared the two marks. The USPTO found
“applicant’s mark, SILENT SK8, sounds the
same and has the same meaning as
registrant’s mark, SILENT SKATE, creating a
confusingly similar overall commercial
impression between the marks.” (USPTO Final
Office Action, [Dkt. No. 71-16], at 5).
....
The Court finds the USPTO’s findings
regarding the use of Silent Sk8, while not
binding, nonetheless persuasive as to why
Defendants’ use of the phrase Silent Skate
in their advertisement, the exact wording of
Plaintiff’s trademark, is highly likely to
cause consumer confusion. This conclusion
is further buttressed by Plaintiff’s
evidence that there has been actual consumer
confusion because of Defendants’ use of the
phrase Silent Skate. (See, e.g.,
Plaintiff’s Exhibits regarding customer
confusion, [Dkt. Nos. 68, 68-1, 68-2, 68-3,
68-4, 68-5, 68-6, 68-7, 68-8, 68-9, 68-10,
68-11, and 68-12]). For the foregoing
reasons, the Court finds Plaintiff has
demonstrated a likelihood of success on the
merits of her trademark infringement claim.
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March 30, 2022 Opinion, [Dkt. No. 98], at 7-9. In sum, the Court
has already determined that Plaintiff states a claim for
trademark infringement based on the Court’s analysis of her
likelihood of success on the merits in addressing the motion for
a preliminary injunction. Nonetheless, the Court will address
Defendants’ remaining arguments.
Defendants aver dismissal of the trademark infringement
claim is appropriate because Plaintiff’s trademark is nothing
more than a generic term. However, this argument, like the
prior issue of the likelihood of confusion, was previously
addressed by the Court in its March 30, 2022 Opinion:
The Court notes Defendants’ fifth affirmative
defense is for “Generic Use.” Defendants
argue “[t]he allegations made in the Amended
Complaint are barred, in whole or in part,
because the alleged marks at issue are
generic.” Defendants’ Answer to the Amended
Complaint, [Dkt. No. 39], at 4. The Court
recognizes that registration serves as prima
facie evidence of the validity of a mark,
meaning that Plaintiff “is entitled to a
strong prima facie presumption that its
registered mark is either not merely
descriptive or if descriptive, that secondary
meaning is presumed, which amounts to the
same thing.” Koninkijke Philips Elecs. N.V.
v. Hunt Control Sys., 2016 U.S. Dist. LEXIS
84299, at *50 (D.N.J. June 29, 2016)(citing
15 U.S.C. § 1115(a); 2 McCarthy on Trademarks
§ 11:43.). However, this is a rebuttable
presumption. J & J Snack Foods, Corp. v.
Nestle USA, Inc., 149 F. Supp. 2d 136, 145
(D.N.J. June 27, 2001)(“If plaintiff has a
federal registration, then there is a strong
presumption that the term is not generic, and
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a defendant must overcome that
presumption.”). Here, despite Defendants’
affirmative defense regarding generic use,
Defendants fail to advance any argument in
opposition to Plaintiff’s Motion for
Preliminary Injunction that Plaintiff cannot
satisfy the first element because the
trademark, Silent Skate, is merely
descriptive of the Plaintiff’s services.
Instead, Defendants appear to concede that
elements one and two are satisfied. For this
reason, and this reason alone, the Court
finds Plaintiff’s trademark, Silent Skate, is
entitled to the presumption of validity.
March 30, 2022 Opinion, [Dkt. No. 98], at 5 n.1. Thus, the Court
adopts and reiterates its prior stance on the argument that the
mark is generic. That said, the Court is not ruling that
Defendant is incapable of proving that the mark is generic.
Rather, such an argument is better addressed under a more fully
developed record and under a standard that does not presume the
allegations in the complaint as true and views them in the light
most favorable to the plaintiff.
Next, Defendants argue that some of Plaintiff’s demands for
damages should be dismissed as they are not recoverable under
the Lanham Act. Specifically, and citing no supporting cases,
Defendants claim pain and suffering as well as emotional
distress are not recoverable under the Lanham Act. Looking to
Plaintiff’s Amended Complaint, she clearly requests relief in
the form of:
[A]ll of the proceeds for every Silent Skate
and/or similar events. $50 admission x 1200
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capacity for 12 events. $20 admission x 600
half of capacity for 6 pandemic let out
dates. Emotional distress, pain and
suffering, lost [sic] of work, reputational
damage, monies spent on case, court cost,
attorney assettance [sic] fees, interest,
and such other relief as the court deems
proper. Including any assets. I have a claim
and ask for $1,003,241 plus cost.
Amended Complaint, [Dkt. No. 17], at 6.
Pursuant to the Lanham Act, a trademark owner may choose to
recover either “any damages sustained by the Plaintiff,” meaning
actual, or, in the alternative, statutory damages. See 15
U.S.C. § 1117(a), (c). Thus, the Lanham Act affords two
alternate paths for calculating damages: “either an award
subject to principles of equity that turns on evidence of the
defendant’s sales and profits, or, alternatively, statutory
damages of between $1,000 and $2 million per counterfeit mark
for each type of good or service offered for sale or
distributed, as the court considers just[.]” Covertech
Fabricating, Inc. v. TVM Building Products, Inc., 855 F.3d 163,
176 (3d Cir. 2017) (citing 15 U.S.C. § 1117). Ultimately, the
choice between the two award schemes is at the plaintiff's
election, and the district court is afforded wide discretion in
applying equitable principles. Ibid. Additionally, under
subsection (b) of § 1117:
[T]he court shall, unless the court finds
extenuating circumstances, enter judgment
for three times such profits or damages, ...
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together with a reasonable attorneys' fee,
if the violation consists of ...
intentionally using a mark or designation,
knowing such mark or designation is a
counterfeit mark, ... in connection with the
sale, offering for sale, or distribution of
goods or services.[]
Accordingly, although Plaintiff’s requested relief is
inartfully explained, the Amended Complaint seeks damages for
reputational harm, lost profits, loss of business, as well as
litigation costs – all of which are recoverable under the Lanham
Act. The Court interprets Plaintiff’s averments of pain,
suffering, and emotional distress as merely a colorful
description of her claims of reputational harm and lost business
opportunities. While the Court could make a determination about
the availability of damages if Plaintiff were to prevail at
trial, the Court reserves decision on that issue so that it may
better put in context the claims and evidence after having the
benefit of a full record.
Lastly, Defendants attempt to invoke the defense of fair
use as a basis for dismissal. “Fair use is an affirmative
defense to a copyright infringement claim, and the proponent
carries the burden of proof in demonstrating fair use.” Video
Pipeline, Inc. v. Buena Vista Home Entertainment, Inc., 210 F.
Supp. 2d 552, 569-70 (D.N.J. 2002) (citing Campbell v. Acuff-
Rose Music, Inc., 510 U.S. 569, 590 (1994)). Here, even if
assuming that fair use principles are applicable in a trademark
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case, Defendants raise the defense in passing with two paltry
paragraphs, thus failing to carry their burden of demonstrating
the defense to the Court’s satisfaction. Moreover, as noted
above in the standard of review, and as was noted by this Court
in Video Pipeline, motions to dismiss do not exist to attack the
merits of the complaint’s claims but are instead utilized merely
to test a complaint’s legal sufficiency. Id. at 570; see also
Nami v. Fauver, 82 F.3d 63, 65 (3d Cir. 1996). Accordingly,
because the Court’s focus at this stage in the proceedings is to
test the sufficiency of the Amended Complaint by viewing the
allegations in the light most favorable to the Plaintiff, the
affirmative defense of fair use will not be considered on the
merits at this time.
Defendants remaining arguments are without sufficient merit
to warrant further consideration by this Court.
3
CONCLUSION
For the foregoing reasons, Defendant’s motion will be
denied. An appropriate Order will follow.
3 In particular, Defendants’ reference to a “patent cause of
action” is irrelevant. This action only concerns a claim for
trademark infringement. Although Plaintiff’s Amended Complaint
references a “patent status,” this merely reflects the pro se
Plaintiff’s inartful description of her trademark Silent Skate
filed with the Patent and Trademark Office and should not be
confused with anything beyond the alleged trademark
infringement.
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Date: June 28, 2022 s/ Noel L. Hillman
At Camden, New Jersey NOEL L. HILLMAN, U.S.D.J.
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