Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91 1 92093
`
`Plaintiff
`
`Pirelli Tyre S.p.A.
`
`Virginia L. Carron
`Finnegan
`901 New York Avenue NW
`
`Washington, DC 20001-4413
`UNITED STATES
`
`virginia.carron@finnegan.com
`
`Response to Board Order/Inquiry
`
`Virginia L. Carron
`
`virginia.carron@finnegan.com, docketing@finnegan.com,
`Iarry. hefter@finnegan.com
`
`
`
`/Virginia L. Carronl
`07/20/201 1
`
`Report to TTAB re Status of Civl Action in Response to June 22 2011 Order.pdf
`( 24 pages )(208678 bytes)
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA420679
`ESTTA Tracking number:
`07/20/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91192093
`Plaintiff
`Pirelli Tyre S.p.A.
`Virginia L. Carron
`Finnegan
`901 New York Avenue NW
`Washington, DC 20001-4413
`UNITED STATES
`virginia.carron@finnegan.com
`Response to Board Order/Inquiry
`Virginia L. Carron
`virginia.carron@finnegan.com, docketing@finnegan.com,
`larry.hefter@finnegan.com
`/Virginia L. Carron/
`07/20/2011
`Report to TTAB re Status of Civl Action in Response to June 22 2011 Order.pdf
`( 24 pages )(208678 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`In response to the Boards’ June 22, 2011 Order requiring that the parties inform the Board of 
` 
`the status of the civil action which occasioned the suspension of this proceeding, PIrelli Tyre S.p.A. and 
`Pirelli & C. S.p.A. (collectively “Pirelli”) report the following. 
`
`On July 15, 2011, the judge in the civil action granted Pirelli’s Motion to Dismiss for Lack of 
` 
`Personal Jurisdiction and ordered the Clerk of Court is to close the case file, terminating all pending 
`matters in the civil action.  Thereafter, on July 19, 2011 the Court issued the attached Report on the 
`Filing or Determination of An Action Regarding a Patent or Trademark to the USPTO informing the PTO 
`that the civil action had been dismissed.  A copy of this Report and the exhibit thereto, which is the 
`Court’s Order dismissing the case, is attached hereto. 
`
`Now that the civil action which occasioned the suspension of this proceeding has been 
` 
`dismissed, Pirelli requests that this proceeding by resumed and appropriate dates be reset by the Board. 
`
`   
`
`

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`Case4:10—Gv—01290—SBA DoGument65
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`Fi|ed07/19/11 Page1of1
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`\ A0 120 Rev. 2/99
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`
`
`TRADEMARK
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`
`Northern District of California
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`on the following
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`l:l Patents or
`
`X Trademarks:
`
`DATE FILED
`March 26 2010
`
`
`
`ZERO MOTORCYCLES, INC.
`
`SBA
`DOCKET NO.
`CV 10-01290 ;
`.3
`
`PLAINTIFF
`
`
`u.s. DISTRICT COURT
`Northern District ofCalifomia 1301 Cla St. RM400S Oaldand CA 94612
`DEFENDANT
`
`
`
`PIRELLI TYRE S.P.A., ET AL.
`
`
`
`
` PATENT OR DATE OF PATENT
`HOLDER OF PATENT OR TRADEMARK
`
`
`TRADEMARK NO.
`OR TRADEMARK
`
`
`SEE ATTACHED
`
` In the above—entit|cd case, the following patent(s) have been included:
`
`INCLUDED BY
`DATE INCLUDED
`
`
`
`PATENT OR
`TRADEMARK NO.
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`E] Amendment
`DATE OF PATENT
`OR TRADEMARK
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`[I Answer
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`El Cross Bill
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`[3 Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`SEE ATTACHED
`
`
`
`2—
`
`—
`——
`
`——
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`***0RDER DENYING LEAVE T0 AMEND AND GRANTING MOTION TO DISMISS, entered on
`07/18/201l***
`
`
`
`CLERK
`
`Richard W.“/ieking
`
`(BY) DEPUTY CLERK
`Jessie MOS1€y
`
`DATE
`
`Copy l—Upon initiation of action, mail this copy to Commissioner Copy 3—Upon termination of action, mail this copy to Commissioner
`Copy 2—Upon filing document adding patent(s), mail this copy to Commissioner Copy 4———Case file copy
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`Case4:10-cv-01290-SBA Document65 Filed07/19/11 Page1 of 1
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`

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`Case4:10-cv-01290-SBA Document65-1 Filed07/19/11 Page1 of 22
`Case4:10-cv-01290-SBA Document64 Filed07/18/11 Page1 of 22
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`UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`OAKLAND DIVISION
`
`Plaintiff,
`
`Case No: C 10-01290 SBA
`ORDER DENYING PLAINTIFF’S
`MOTION FOR LEAVE TO AMEND
`AND GRANTING DEFENDANTS’
`MOTION TO DISMISS
`Docket 32, 33
`
`ZERO MOTORCYCLES, INC., a Delaware
`corporation,
`
`
`
`vs.
`PIRELLI TYRE S.P.A. and PIRELLI & C.
`S.PA.,
`
`
`
`
`Defendants.
`
`Plaintiff Zero Motorcycles, Inc., filed the instant declaratory relief action against
`Defendants Pirelli & C.S.p.A. and Pirelli Tyre S.p.A. (collectively “Defendants”) seeking a
`declaration that its use of the ZERO mark and ZERO-formative marks does not infringe
`Defendants’ ZERO and ZERO-formative registered trademarks. The parties are presently
`before the Court on: (1) Plaintiff’s Motion for Leave to File Amended Complaint, Dkt. 33;
`and (2) Defendants’ Motion to Dismiss for Lack of Personal Jurisdiction, Dkt. 32. Having
`read and considered the papers filed in connection with this matter and being fully
`informed, the Court hereby DENIES Plaintiff’s motion for leave to amend and GRANTS
`Defendants’ motion to dismiss. The Court, in its discretion, finds this matter suitable for
`resolution without oral argument. See Fed. R. Civ. P. 78(b); N.D. Cal. Civ. L.R. 7-1(b).
`
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`Case4:10-cv-01290-SBA Document65-1 Filed07/19/11 Page2 of 22
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`I.
`
`BACKGROUND
`
`FACTUAL SUMMARY
`A.
`Plaintiff is a manufacturer of electric motorcycles, which it markets and sells in
`“many foreign countries” under the ZERO MOTORCYCLES mark—a mark which it has
`used since 2007. Compl. ¶¶ 8-9, 12. Plaintiff owns United States trademark registrations
`for ZERO for use on electric vehicles, namely motorcycles, and ZERO-formative marks
`consisting of ZERO MOTORCYLES, ZERO DS, ZERO S, ZERO SS, ZERO X and ZERO
`MX. Id. ¶ 13. Defendants Pirelli & C.S.p.A. (“Pirelli & C.”) and Pirelli Tyre S.p.A.
`(“Pirelli Tyre”) allegedly manufacture and sell various products, including tires for
`vehicles, and own a number of trademarks which incorporate the ZERO mark. Id. ¶¶ 17-
`18.
`
`Defendant Pirelli & C. is the parent entity and 100% owner of Defendant Pirelli
`Tyre. Giannesi Decl. ¶ 3, Dkt. 32-1. Both entities are organized under Italian law as a
`società per azioni, a type of Italian corporate body, and have their principal places of
`business in Milan, Italy. Id. ¶¶ 6, 12. Neither maintains any presence in California nor
`conducts any business in the state. Id. ¶¶ 7-17. Though Pirelli & C. does not directly
`transact business in California, it indirectly owns subsidiaries which do, including Pirelli
`Tire LLC. Rosenzweig Decl. ¶ 4, Dkt. 49-2. Specifically, at the time the Complaint was
`filed, Pirelli Tire LLC was owned by Pirelli North America, Inc. (“Pirelli North America”),
`which, in turn, was owned by Pirelli Tyre Holland N.V., which, in turn, was owned by
`Pirelli Tyre, which, as noted, was owned by Pirelli & C. Id.1
`According to Plaintiff, “[i]n March 2009, Defendants began a global campaign
`against Plaintiff’s trademark applications by commencing a series of opposition and
`cancellation filings against Plaintiff’s marks in the [United States Patent and Trademark
`Office (“PTO”)], European Union and Switzerland.” Id. ¶ 21. In particular, Plaintiff avers
`
`1 Defendants indicate that as of June 1, 2010, Pirelli North America became owned
`by Pirelli Tyre, which remains owned by Pirelli & C. Second Rosenweig Decl. ¶ 4, Dkt.
`49-2.
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`that on June 10, 2009, Defendants submitted a Combined Declaration of Use and
`Incontestability to the PTO to ensure that their ZERO mark remained on the PTO’s
`Principal Register. Pl.’s Opp’n to Defs.’ Mot. to Dismiss (“Pl.’s Opp’n”) at 3, Dkt. 36.2
`The declaration claimed that the ZERO mark was in use in the United States, and attached
`an exemplar consisting of marketing material showing a tire with the P ZERO mark. Id.;
`Rodebaugh Decl. Ex. 1, Dkt. 37-1. Plaintiff claims that the representation of use was false
`ostensibly because the exemplar was for the P ZERO mark, as opposed to the ZERO mark.
`Plaintiff also points to a Notice of Opposition filed by Defendants in the PTO on
`September 29, 2009, in response to Plaintiff’s trademark applications. Defendants’
`opposition claimed that Plaintiff’s use of ZERO-formative marks would “be likely to cause
`confusion, or to cause mistake, or to deceive in violation of Section 2(d), 15 U.S.C.
`§ 1052(d).” Id. Ex. 3 ¶ 19. Similarly, on December 16, 2009, Defendants filed a Petition
`for Cancellation before the PTO, which again claimed that Plaintiff’s use of ZERO-
`formative marks was likely to cause confusion. Id. Ex. 4 ¶ 15, Dkt. 37-2. Plaintiff alleges
`that Defendants’ submissions to the PTO are part of a campaign of harassment to prevent it
`from using ZERO or ZERO-formative marks.
`B.
`PROCEDURAL HISTORY
`On March 26, 2010, Plaintiff filed the instant action in this Court seeking
`declaratory and injunctive relief. Plaintiff alleges that a justiciable controversy has arisen
`regarding Plaintiff’s use of the ZERO mark and ZERO-formative marks by virtue of
`Defendants’ actions before the PTO and their corresponding refusal to discuss settlement.
`The Complaint alleges four claims for relief, as follows: (1) a declaration of non-trademark
`infringement; (2) a declaration of no unfair competition; (3) cancellation of United States
`Trademark Registration No. 2749340; and (4) a permanent injunction to enjoin Defendants
`
`2 Under 15 U.S.C. § 1058, a previously-registered mark is subject to cancellation in
`ten years unless the registrant files an affidavit with the PTO showing that mark is still in
`use. It was in connection with this requirement that Defendants submitted the affidavits
`referenced by Plaintiff. See Carron Decl. Ex. 5, Dkt. 50-1.
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`from further prosecuting their cancellation and opposition proceedings in the PTO, and
`anywhere in the world.
`In response to the Complaint, Defendants filed a motion to dismiss for lack of
`personal jurisdiction, pursuant to Federal Rule of Civil Procedure 12(b)(2). The crux of
`Defendants’ motion is that Defendants are Italian entities over which the Court lacks
`general or specific jurisdiction. Pursuant to the stipulation of the parties, the Court
`subsequently granted Plaintiff leave to conduct jurisdictional discovery and denied
`Defendants’ motion to dismiss without prejudice. Dkt. 25. After Plaintiff conducted its
`jurisdictional discovery, Defendants renewed their motion to dismiss. Dkt. 32.
`Two days after Defendants filed their renewed motion to dismiss, Plaintiff separately
`filed a motion for leave to file an amended complaint. Dkt. 33. Plaintiff seeks to join
`Pirelli North America and Pirelli Tire LLC, both of which are United States subsidiaries of
`Defendants, as party-defendants. In addition, Plaintiff requests leave to include three
`additional claims for: (1) disparagement under the Lanham Act § 43(a); (2) unfair
`competition under California Business & Professions Code § 17200; and (3) trade libel
`under California law. See Pl.’s Proposed First Am. Compl. (“FAC”) (Ex. A to Pl.’s Mot.
`for Leave to Amend). Defendants oppose Plaintiff’s motion on the ground that the
`proposed amendments are futile and that there is no basis for joining Pirelli North America
`and Pirelli Tire LLC in this action. Dkt. 54. Defendants also claim that Plaintiff has
`unduly delayed in seeking leave to amend.
`II.
`PLAINTIFF’S MOTION FOR LEAVE TO AMEND
`
`LEGAL STANDARD
`A.
`Rule 15(a)(2) provides that leave to amend a complaint should be “freely given
`when justice so requires.” Fed. R. Civ. P. 15(a)(2); Moss v. United States Secret Serv., 572
`F.3d 962, 972 (9th Cir. 2009). Rule 15 “is to be applied with extreme liberality.”
`Eminence Capital, LLC v. Aspeon, Inc., 316 F.3d 1048, 1051 (9th Cir. 2003). “Four
`factors are commonly used to determine the propriety of a motion for leave to amend.
`These are: bad faith, undue delay, prejudice to the opposing party, and futility of
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`amendment.” Ditto v. McCurdy, 510 F.3d 1070, 1079 (9th Cir. 2007) (citations and
`internal quotation marks omitted). The party opposing the amendment carries the burden
`of showing why leave to amend should not be granted. DCD Programs, Ltd. v. Leighton,
`833 F.2d 183, 187 (9th Cir. 1987). The decision to grant or deny a request for leave to
`amend rests in the discretion of the trial court. See California v. Neville Chem. Co., 358
`F.3d 661, 673 (9th Cir. 2004).
`Defendants oppose Plaintiff’s motion on the ground that the joinder of new claims
`and parties is futile. Leave to amend under Rule 15(a) “need not be granted when the
`proposed amendment is futile.” Nordyke v. King, -- F.3d --, 2011 WL 1632063, at *8 n.12
`(9th Cir. May 2, 2011). “A proposed amended complaint is futile if it would be
`immediately subject to dismissal.” Id. (internal quotation marks omitted). The test for
`assessing futility is “identical” to the test applied on a Rule 12(b)(6) motion. Id. Thus, in
`assessing the allegations of a proposed pleading, the Court “accept[s] as true all well-
`pleaded allegations of material fact, and construe[s] them in the light most favorable to the
`non-moving party.” Daniels-Hall v. National Educ. Ass’n, 629 F.3d 992, 998 (9th Cir.
`2010). The facts alleged must be sufficient to push the claims “across the line from
`conceivable to plausible[.]” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 557 (2007)). In
`addition, the allegations must “give the defendant fair notice of what the … claim is and the
`grounds upon which it rests.” Id. at 555 (internal quotations and citation omitted).
`“Threadbare recitals of the elements of a cause of action, supported by mere conclusory
`statements, do not suffice.” Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009).
`B.
`PROPOSED CLAIMS
`1.
`Disparagement under the Lanham Act
`Plaintiff first proposes joining a claim for disparagement under the Lanham Act.
`The Lanham Act allows for product disparagement claims in cases in which there is a
`“misrepresentation of ‘the nature, characteristics, qualities, or geographic origin’ of
`‘another person’s goods, services, or commercial activities.’” Id. at 903 (quoting 15 U.S.C.
`§ 1125(a)(1)(B)). To state a claim for product disparagement, the plaintiff must allege
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`that: (1) that the defendant made a false or misleading statement of fact in commercial
`advertising or promotion about the plaintiff’s goods or services; (2) that the statement
`actually deceives or is likely to deceive a substantial segment of the intended audience;
`(3) that the deception is material in that it is likely to influence purchasing decisions;
`(4) that the defendant caused the statement; and (5) that the statement results in actual or
`probable injury to the plaintiff. See Zenith Elects. Corp. v. Exzec, Inc., 182 F.3d 1340,
`1348 (Fed. Cir. 1999); see also Southerland Sod Farms v. Stover Seed Co., 108 F.3d 1134,
`1139 (9th Cir. 1997) (reciting same elements for a Lanham Act false advertising claim).3
`The facts alleged in Plaintiff’s proposed amended complaint fail to state a plausible
`claim for product disparagement under the Lanham Act. Plaintiff predicates its proposed
`claim on “two public, false assertions of fact that disparage [Plaintiff] and its products and
`marks: 1) Pirelli has sworn that it has used a ZERO mark in US [sic] commerce, identical
`to Plaintiff’s ZERO mark; and 2) Pirelli has sworn that [Plaintiff] is confusing relevant
`consumers and diluting Pirelli’s allegedly famous ZERO-formative marks….” See Pl.’s
`Reply at 9, Dkt. 56. These allegations fail to state a claim for product disparagement
`because the alleged misstatements were made to the PTO, and not in the course of
`commercial advertising or promotion. In addition, the alleged misstatements pertain to
`Plaintiff’s marks, not its goods or services. See Freecycle Network, 505 F.3d at 904.
`Accordingly, Plaintiff’s claim for product disparagement under the Lanham Act is futile,
`since it “would be immediately subject to dismissal.” Nordyke, 2011 WL 1632063, at *8
`n.12.
`
`Unfair Competition Law
`2.
`Next, Plaintiff seeks to add a claim for violation of California’s Unfair Competition
`Law (“UCL”), which makes actionable any “unlawful, unfair or fraudulent business act or
`
`3 It is not entirely clear from the proposed amended complaint whether Plaintiff is
`attempting to allege that Defendants disparaged Plaintiff’s products or its marks—or both.
`See FAC ¶¶ 65, 68. To the extent that Plaintiff is purporting to state a claim for trademark
`disparagement, the Ninth Circuit has held that “no such claim exists under the Lanham
`Act.” Freecycle Network, Inc. v. Oey, 505 F.3d 898, 904 (9th Cir. 2007). Therefore, the
`Court considers whether Plaintiff has stated a claim for product disparagement.
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`practice.” Cal. Bus. & Prof. Code § 17200; see Birdsong v. Apple, Inc., 590 F.3d 955, 959
`(9th Cir. 2009) (“Each prong of the UCL is a separate and distinct theory of liability.”). In
`its proposed claim under the UCL, however, Plaintiff does not specifically identify the
`conduct that allegedly violates the UCL. Instead, Plaintiff merely incorporates “paragraphs
`1-71 of this Complaint,” and asserts that the facts alleged therein constitute “unlawful,
`unfair and/or fraudulent activities under Cal. Bus. and Prof. Code § 17200 and/or common
`law.” FAC ¶¶ 72-73. This Court has previously found that this type of vague, broad and
`conclusory pleading is insufficient to state a claim for relief. See Rashdan v. Geissberger,
`No. C 10-00634 SBA, 2011 WL 197957, at *10 (N.D. Cal. Jan. 14, 2011) (“Incorporating
`the preceding 188 paragraphs of the Complaint fails to provide Defendants with ‘fair
`notice’ of the basis of Plaintiff’s []claim.”). Nevertheless, the allegations set forth in
`paragraphs one through seventy-one of the proposed amended complaint are insufficient to
`state a claim under any of the three prongs of the UCL.
`a)
`Unlawful
`“[A]n action based on [the UCL] to redress an unlawful business practice ‘borrows’
`violations of other laws and treats these violations . . . as unlawful practices, independently
`actionable under section 17200 et seq. and subject to the distinct remedies provided
`thereunder.” Farmers Ins. Exch. v. Super. Court, 2 Cal.4th 377, 383 (1992) (quotations and
`citations omitted); Chabner v. United Omaha Life Ins. Co., 225 F.3d 1042, 1048 (9th Cir.
`2000). “[A] UCL claim of any kind “must identify the particular section of the statute that
`was violated, and must describe with reasonable particularity the facts supporting the
`violation.” Baba v. Hewlett-Packard Co., No. C 09-05946 RS, 2010 WL 2486353, at *6
`(N.D. Cal. June 16, 2010).
`In his proposed amended complaint, Plaintiff fails to cite any particular statute or
`allege any particular facts demonstrating that Defendants engaged in unlawful activity.
`Nonetheless, in its reply brief, Plaintiff attempts to clarify that Defendants’ statements to
`the PTO amount to violations of the Lanham Act and constitute perjury under federal law.
`Pl.’s Reply at 12. Setting aside that Plaintiff’s argument is improperly presented for the
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`first time in its reply, see Zamani v. Carnes, 491 F.3d 990, 997 (9th Cir. 2007), in neither
`the proposed pleading nor its reply does Plaintiff specifically identify the provision of the
`Lanham Act that Defendants allegedly violated. The absence of such allegations is fatal to
`a claim brought under the unlawful prong of the UCL. See Baba, 2010 WL 2486353, at *6.
`Nor does Plaintiff allege facts showing a “willful intent to provide false testimony,”
`which is required to sustain a claim for perjury. See United States v. Armstrong, 620 F.3d
`1172, 1176 (9th Cir. 2010). Plaintiff avers that Defendants lied to the PTO about the
`ZERO mark being used in commerce ostensibly because the exemplar attached to
`Defendants’ Combined Declaration of Use and Incontestability consisted of a print
`advertisement for a tire using the P ZERO mark, as opposed to the ZERO mark.
`Rodenbaugh Decl. Ex. 1. However, the fact that Defendants submitted the allegedly false
`statement with the exemplar undermines any assertion of a willful intent to deceive the
`PTO, since the PTO obviously could assess the accuracy of Defendants’ representation by
`comparing it to the exemplar. Stated another way, if Defendants’ intent were to deceive the
`PTO, it would be illogical for them to have attached an exemplar which ostensibly
`contradicts their representation. As for Defendants’ other statement regarding the
`likelihood of customer confusion, such statement was not presented under penalty of
`perjury. Rather, that allegation was made by Defendants’ attorneys in a pleading submitted
`to the PTO. Id. Ex. 3 ¶ 9. In sum, the Court finds that Plaintiff has failed to allege a
`plausible claim for engaging in an unlawful business practice under the UCL.
`b)
`Unfair
`An unfair business practice under the UCL is “one that either offends an established
`public policy or is immoral, unethical, oppressive, unscrupulous, or substantially injurious
`to consumers.” McDonald v. Coldwell Banker, 543 F.3d 498, 506 (9th Cir. 2008); Glenn
`K. Jackson Inc. v. Roe, 273 F.3d 1192, 1203 (9th Cir. 2001). Such a claim requires a
`plaintiff to “tether” its allegation of unfair competition to a constitutional or statutory
`provision or regulation carrying out such a statutory policy. See Ferrington v. McAfee,
`Inc., No. C 10-1455 LHK, 2010 WL 3910169, at *11-13 (N.D. Cal. Oct. 5, 2010) (citing
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`Lozano v. AT & T Wireless Servs., 504 F.3d 718 (9th Cir. 2007)); see also Cel-Tech
`Comms. v. L.A. Cellular Tel. Co., 20 Cal.4th 163, 185 (1999) (tethering test applies in
`actions brought by a business competitor challenging anti-competitive practices).
`Though not entirely clear from the proposed pleading, Plaintiff appears to allege that
`Defendants acted “unfairly” by engaging in a concerted effort before the PTO and other
`fora to challenge Plaintiff’s use of the ZERO mark. See, e.g., FAC ¶¶ 40-44. However,
`there are no allegations that tether such claim to any constitutional, statutory or regulatory
`provision. To the contrary, it is clear from the allegations presented that Defendants did
`little more that seek to protect its intellectual property rights with respect to its use of the
`ZERO mark. Tellingly, Plaintiff has failed to cite to any decisional authority holding that
`liability under the UCL may be predicated upon such conduct.4 The Court therefore finds
`no legal or factual basis for Plaintiff’s proposed claim for violation of the unfair prong of
`the UCL.
`
`Fraudulent
`c)
`Conduct is considered “fraudulent” under the UCL if the conduct is “likely to
`deceive.” Morgan v. AT & T Wireless Servs., Inc., 177 Cal.App.4th 1235, 1254 (2009).
`Although a UCL claim need not plead the elements of common law fraudulent deception, it
`must allege the existence of a duty to disclose, Berryman v. Merit Prop. Mgmt., Inc., 152
`Cal.App.4th 1544, 1557 (2007), as well as reliance, In re Tobacco II Cases, 46 Cal.4th 298,
`328 (2009). In addition, the fraudulent conduct must be alleged with particularity under
`Rule 9(b). See Kearns v. Ford Motor Co., 567 F.3d 1120, 1125 (9th Cir. 2009) (“we have
`specifically ruled that Rule 9(b)’s heightened pleading standards apply to claims for
`violations of the CLRA and UCL.”). In the instant action, Plaintiff’s proposed UCL claim
`
`4 In its reply, Plaintiff cites to several district court decisions emanating from outside
`the Ninth Circuit for the proposition that groundless legal and administrative actions may
`constitute unfair competition. Pl.’s Reply at 13. The allegations of the proposed pleading
`fail to demonstrate that Defendants undertook frivolous or malicious legal action. In
`addition, because none of those cases involved a claim under California’s UCL or involved
`circumstances analogous to those at issue, none of those cases is germane to the matter
`before the Court.
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`fails to allege any facts demonstrating that the public was deceived, that Defendants
`violated any duty to disclose, or that any person relied on Defendants’ alleged
`misrepresentations. Plaintiff’s wholly vague assertions of fraudulent conduct are
`insufficient to establish a plausible claim. See Twombly, 550 U.S. at 557.
`3.
`Trade Libel
`Plaintiff’ third and final proposed claim is for trade libel. In California, a
`disparaging statement about a competitor’s product that causes the competitor to suffer
`pecuniary damages is actionable as trade libel. See Microtec Research, Inc. v. Nationwide
`Mut. Ins. Co., 40 F.3d 968, 972-73 (9th Cir. 1994). To state a claim for trade libel, a
`plaintiff must allege facts demonstrating a “(1) publication, (2) which induces others not to
`deal with plaintiff, and (3) special damages.” Aetna Cas. and Sur. Co., Inc. v. Centennial
`Ins. Co., 838 F.2d 346, 351 (9th Cir. 1998). To properly allege damages, the pleader must
`specifically identify the customers or transactions lost as a result of the disparagement; a
`general decline in business will not suffice. See Passport Health, Inc. v. Travel Med, Inc.,
`No. 2:09-cv-01753-GEB-JFM, 2009 WL 3824743, at *5 (E.D. Cal. Nov. 16, 2009).
`Plaintiff has failed to allege sufficient facts to sustain a claim for trade libel. First,
`Plaintiff has failed to allege any false or disparaging statements regarding Plaintiff’s
`property. Instead, Plaintiff has simply alleged that Defendants made false statements to the
`PTO regarding the similarity of their respective marks. Such a statement does not impugn
`the quality or character of Plaintiff’s motorcycles or any of its other products. There also
`are no facts alleged that Defendants’ statements caused others not to “deal with” Plaintiff.
`Lastly, Plaintiff has failed to identify any particular customers or transactions lost as a
`result of Defendants’ conduct. In short, Plaintiff has failed to allege sufficient facts to state
`a plausible claim for trade libel. The Court therefore denies Plaintiff’s request for leave to
`amend to add a claim for trade libel.
`C.
`PROPOSED PARTIES
`Finally, Plaintiff seeks to join United States subsidiaries, Pirelli Tire LLC and its
`parent entity, Pirelli North America, as party-defendants in this action. Without citing any
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`legal authority or providing any reasoned analysis, Plaintiff summarily asserts that these
`subsidiaries should be joined because they “conspired and acted in concert with Defendants
`to obstruct Plaintiff’s attempts to register and secure its trademark rights.” Pl.’s Mot. at 4.
`Yet, the proposed amended complaint is devoid of any factual allegations which support
`such a claim. Nor are there any allegations that either had any involvement with
`Defendants’ filings with the PTO which form the basis of Plaintiff’s claims. Because
`Plaintiff has failed to aver any factual or legal basis for joining Pirelli Tire LLC and Pirelli
`North America, the Court denies Plaintiff’s request to join them as parties to this action.
`D.
`CONCLUSION
`The Court finds that the joinder of additional claims and parties in this action is not
`warranted. Plaintiff’s proposed claims for disparagement under the Lanham Act, unfair
`competition and trade libel lack merit, and Plaintiff has failed to articulate any cognizable
`claims against Pirelli Tire LLC and Pirelli North America. In addition, the Court is
`persuaded by Defendants’ contention that Plaintiff has engaged in undue delay. The “facts”
`underlying Plaintiff’s proposed claims were available to Plaintiff when it initiated this
`lawsuit in 2010. Yet, Plaintiff fails to explain why it waited until over a year after filing
`suit to seek the joinder of these claims and parties. Thus, the Court, in its discretion, denies
`Plaintiff’s motion for leave to amend on the grounds of futility and undue delay. The
`Court now turns to Defendants’ motion to dismiss for lack of personal jurisdiction.
`//
`//
`//
`//
`//
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`III. DEFENDANTS’ MOTION TO DISMISS FOR LACK OF PERSONAL
`JURISDICTION
`
`LEGAL STANDARD
`A.
`District courts have the authority to dismiss an action for lack of personal
`jurisdiction. Fed. R. Civ. P. 12(b)(2). “Where, as here, the existence of personal
`jurisdiction is challenged and the defendant appears specially to contest its presence in the
`jurisdiction, the plaintiff has the burden to come forward with some evidence to establish
`jurisdiction.” Dist. Council No. 16 of Int’l Union of Painters & Allied Trades v. B & B
`Glass, Inc., 510 F.3d 851, 855 (9th Cir. 2007). “The court may consider evidence presented
`in affidavits to assist it in its determination and may order discovery on the jurisdictional
`issues.” See Doe v. Unocal Corp., 248 F.3d 915, 922 (9th Cir. 2001). “When a district
`court acts on a defendant’s motion to dismiss without holding an evidentiary hearing, the
`plaintiff need make only a prima facie showing of jurisdictional facts to withstand the
`motion to dismiss.” Id. (citing Ballard v. Savage, 65 F.3d 1495, 1498 (9th Cir. 1995)). The
`Court accepts as true any uncontroverted allegations in the complaint and resolves any
`conflicts between the facts contained in the parties’ evidence in the plaintiff’s favor.
`Glencore Grain Rotterdam B.V. v. Shivnath Rai Harnarain Co., 284 F.3d 1114, 1119 (9th
`Cir. 2002). However, for personal jurisdiction purposes, a court “may not assume the truth
`of allegations in a pleading which are contradicted by affidavit.” Alexander v. Circus
`Circus Enters., Inc., 972 F.2d 261, 262 (9th Cir. 1992) (internal quotations omitted).
`Personal jurisdiction over a nonresident defendant is analyzed under a two-part test.
`Chan v. Soc’y Expeditions, Inc., 39 F.3d 1398, 1404 (9th Cir. 1994). First, the exercise of
`jurisdiction mu