La Canada Ventures, Inc. v. MDalgorithms, Inc.

I. INTRODUCTION

16 This is a trademark infringement suit. Plaintiff and Counter-defendant is La Canada 17 Ventures, Inc., a health and beauty retailer offering cosmetic products (“Plaintiff”). Defendant and 18 Counter-claimant MDalgorithms is a company that offers computer software and app technology 19 for education and advice about the treatment of acne, a skin disorder (“Defendant”). In its Second 20 Amended Complaint (“SAC”) Plaintiff avers that Defendant infringes on Plaintiff’s MD Mark and 21 multiple MD-formative Marks by using the MD marks in the sale of its health and beauty 22 products, in direct competition with Plaintiff. Defendant filed counterclaims in a First Amended 23 Counterclaim (“FACC”), seeking cancellation of Plaintiff’s registrations on the grounds that they 24 are void ab initio or otherwise derived the right of incontestability by fraud on the United States 25 Patent and Trademark Office (“USPTO”). Defendant also filed unfair competition counterclaims 26 against Plaintiff, arguing that Plaintiff used Defendant’s marks “MDhair” and “MDacne” 27 unlawfully. Plaintiff now moves for dismissal of Defendant’s counterclaims, claiming that it, not 1 the…