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Global Brand Holdings, LLC v. Church & Dwight Co., Inc.

United States District Court, S.D. New York

December 19, 2017

CHURCH & DWIGHT CO., INC., Defendant.

          OPINION & ORDER


         Global Brand Holdings, LLC (“Global” or “plaintiff”) is the owner of a number of registered trademarks that include the phrase “XOXO” for, inter alia, young women's apparel and accessories. (Am. Compl., ECF No. 26, ¶ 12.) Church & Dwight Co. (“Church & Dwight” or “defendant”), which owns the Trojan condom brand, owns a registered trademark for “XOXO” for use in connection with condoms. On August 29, 2017, Global filed suit against Church & Dwight for federal and state trademark infringement and dilution claims.

         The instant motion concerns solely the dilution claims. The law provides for broad relief when a plaintiff holds a truly famous mark-such as Coca-Cola, Nike, Kodak, or Buick-and when actions by a defendant (with regard to a product that may or may not be within the scope of the registration) may dilute the value of that mark in some way. Most importantly, and unlike trademark infringement claims, a “trademark dilution” claim does not require a plaintiff to demonstrate likelihood of confusion between the two marks.

         Defendant's motion to dismiss plaintiff's federal and state trademark dilution claims asserts that (1) the allegations are insufficient to support the requisite degree of “fame”; and (2) the complete bar to suit for state dilution claims, found in § 1125(c)(6), requires dismissal of Count VII. The Court held oral argument on November 30, 2017.

         For the reasons set forth below, defendant's motion is GRANTED.

         I. BACKGROUND

         The following factual allegations are drawn from the Amended Complaint and assumed true for purposes of this motion.

         Plaintiff Global owns at least fourteen registered trademarks that include the term “XOXO” in connection with use on goods including clothing, shoes, cosmetics, watches, luggage, bedding, perfume, body cream, and more. (Id. ¶ 12.) Plaintiff specifically alleges that it designs its products for young women and emphasizes the “feminine, fashionable, confident, romantic, and sexy nature of their XOXO-branded products.” (Id. ¶ 10.) Plaintiff uses the tagline “Smart Sexy” and describes its XOXO-branded products as “sexy.” (Id. ¶ 10.) Its products-which often contain “one or more hangtags . . . prominently featur[ing] the XOXO trademarks”-are sold nationwide through brick-and-mortar stores such as Target and Walmart, as well as online at,, and elsewhere. (Id. ¶¶ 15, 17.)

         Plaintiff has made hundreds of millions of dollars on sales of goods bearing its XOXO trademarks and has invested millions of dollars as well as “decades of time and effort to create consumer recognition” in the marks. (Id. ¶ 16, 18.) Its advertisements for XOXO-branded products, which have featured “iconic” models “dressed in a seductive manner, ” have appeared in “leading mainstream and fashion publications in the U.S., including, for example, Cosmopolitan, Glamour, Seventeen, Latina, Life & Style, and the New York Post.” (Id. at ¶¶ 19-21.) Plaintiff points to an “advertising campaign featuring high fashion models living in a Fifth Avenue storefront display for several days” as the reason for “significant media attention.” (Id. ¶ 19.) As a result of all this, plaintiff alleges, the “consuming public has come to associate the XOXO Trademarks with high quality goods and services emanating exclusively from Global.” (Id. ¶ 18.)

         Defendant distributes, advertises, and sells household and personal care products, including a line of condoms featuring an “XOXO” mark. (Id. ¶ 4; Mem. of Law in Supp. of Def.'s Mot. to Dismiss Pl.'s Trademark Dilution Claims (“Mem. Supp.”), ECF No. 35, at 6.) Its tagline is “SMART. SEXY. CONFIDENT.” (Am. Compl. at ¶ 23.) Its advertising is similarly geared towards young, fashion-conscious women. (Id.) Like plaintiff's goods, defendant's Trojan condoms are sold at brick-and-mortar stores as well as through online retailers by Walmart, Target,,, and others.

         Plaintiff contends that defendant's use of “XOXO” on its condoms infringes upon its trademarks and has “intentionally and willfully diluted, and/or is likely to dilute the distinctive quality of plaintiff's famous XOXO Trademarks.” (Id. ¶¶ 58, 60.)


         Under Rule 12(b)(6) of the Federal Rules of Civil Procedure, a defendant may move to dismiss a complaint for “failure to state a claim upon which relief can be granted.” Fed.R.Civ.P. 12(b)(6). To survive a Rule 12(b)(6) motion to dismiss, a plaintiff must provide grounds upon which their claim rests through “factual allegations sufficient ‘to raise a right to relief above the speculative level.'” ATSI Commc'ns, Inc. v. Shaar Fund, Ltd., 493 F.3d 87, 98 (2d Cir. 2007) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)). In other words, the complaint must allege “‘enough facts to state a claim to relief that is plausible on its face.'” Starr v. Sony BMG Music Entm't, 592 F.3d 314, 321 (2d Cir. 2010) (quoting Twombly, 550 U.S. at 570). “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).

         In applying that standard, the Court accepts as true all well-pled factual allegations, but does not credit “mere conclusory statements” or “threadbare recitals of the elements of a cause of action.” Id. Furthermore, the Court will give “no effect to legal conclusions couched as factual allegations.” Port Dock & Stone Corp. v. Oldcastle Ne., Inc., 507 F.3d 117, 121 (2d Cir. 2007) (citing Twomblv, 550 U.S. at 555). If the Court can infer no more than the mere possibility of misconduct from the factual averments-in other words, if the well-pled allegations of the ...

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