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Scotch & Soda B.V. v. Scotch and Iron LLC

Use of Highly Similar Mark Leads to Finding of Likely Confusion as to Goods' Authorization

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OPINION AND ORDER  Plaintiff Scotch & Soda B.V., Inc. (“Plaintiff”), a clothing distributor brings this action against competitor, Scotch and Iron LLC and its founder Russel Taylor (collectively “Defendants”) alleging trademark infringement, false designation of origin, false advertising, and unfair competition pursuant to the 15 U.S.C. §1114(1)(a) (the “Lanham Act”), New York Common Law, and NY Gen. Bus. Law §360. Defendants now move to dismiss the Complaint in its entirety pursuant to Fed. R. Civ. Pro Rule 12(b)(6). Defs.’ Mot. Dismiss, ECF No. 19. For the reasons set forth below, Defendants’ motion is DENIED. BACKGROUNDPlaintiff Scotch & Soda B.V. is a Netherlands corporation that sells a variety of consumer goods including clothing, bags, jewelry, and accessories. Compl.

2, 7, ECF No. 1. Plaintiff is the owner of five trademarks: SCOTCH & SODA, SCOTCH SHRUNK, MAISON SCOTCH, SCOTCH R’BELLE, AND ATELIER SCOTCH (together “Plaintiff’s SCOTCH Marks”). Id. at7. Plaintiff began using Plaintiff’s SCOTCH Marks, including its SCOTCH & SODA mark, in the United States in connection with goods, services, and retail stores (including online retail stores) as early as 2006. Id. at10. Plaintiff alleges that Defendants Scotch & Iron and Russell Taylor have adopted and are using the highly similar “SCOTCH & IRON” mark, including in connection with highly similar goods and services, such as clothing and retail stores, without prior authorization from Plaintiff. Id. at11-12. Based on these facts, Plaintiff pleads five claims against Defendants.First, that Defendants have infringed on Plaintiff’s trademarks pursuant to the Lanham Act. 15 U.S.C. §1114. Plaintiff claims that, without Plaintiff’s consent or authorization, Defendants have adopted the SCOTCH & IRON mark, which is confusingly similar to Plaintiff’s SCOTCH Marks, and Defendants are using the mark in a way that damages the Plaintiff and is likely to cause confusion, mistake, and deception as to the origin of the goods and services offered by Defendants. Compl.

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